【Trademark】 Case in Which the Distinctiveness of the Mark “相続ワンストップ” (Sōzoku Wan Sutoppu; “Inheritance One-Stop”) Was Disputed
the Intellectual Property High Court (IP High Court) September 16, 2026 Case No. 2026 (Gyo-Ke) 10020 Action for Revocation of Trial Decision
Summary
This is a case in which the Plaintiff, an administrative scrivener corporation, sought revocation of a trial decision dismissing its appeal against the examiner’s decision of refusal concerning a mark consisting of the characters “相続ワンストップ.” The Court held, based on the meanings of the constituent characters and the actual circumstances of trade in inheritance-related operations, that, when used for the designated services, the applied-for mark would be recognized by ordinary consumers as indicating and describing the quality of the services, namely, that “various inheritance-related operations can be performed in one place.” The Court also found that, if used for services not conforming to that meaning, the mark would be likely to mislead as to the quality of the services; it therefore affirmed the applicability of Article 3(1)(iii) and Article 4(1)(xvi) of the Trademark Act and dismissed the Plaintiff’s claim.
Case Overview
The mark at issue (the applied-for mark):
The Plaintiff is an administrative scrivener corporation whose name includes the characters “相続ワンストップ.” On August 2, 2022, the Plaintiff filed an application for registration of a mark in which the characters “相続ワンストップ” were written horizontally in a commonly used manner. The initially designated services included the provision of information concerning inheritance procedures, among other services, but, through multiple amendments, including amendments made after the request for trial, they were limited to Class 45, “preparation of documents to be submitted to public agencies and other documents concerning rights, duties, or the certification of facts as referred to in Article 1-2 of the Administrative Scrivener Act.”
The Plaintiff received an examiner’s decision of refusal and filed an appeal against the examiner’s decision of refusal, but the Japan Patent Office rendered a trial decision dismissing the appeal on the ground that the applied-for mark fell under Article 3(1)(iii) and Article 4(1)(xvi) of the Trademark Act. The trial decision found that “相続ワンストップ,” as a whole, readily caused the meaning of approximately “performing inheritance (related operations) on a one-stop basis (being able to complete the necessary related work in a single procedure)” to be recognized, and would be recognized as merely indicating the quality (content) of the services; it also held that, if used for services other than services through which inheritance-related operations can be performed on a one-stop basis, the mark would be likely to mislead as to the quality of the services.
The Plaintiff alleged (1) a procedural defect in that the reasons for the trial decision were unclear, (2) an error in the determination concerning the applicability of Article 3(1)(iii) of the Trademark Act, and (3) an error in the determination concerning the applicability of Article 4(1)(xvi) of the Trademark Act, and sought revocation of the trial decision. With respect to (1), the Court stated that the trial decision merely pointed out that the grounds for refusal could not be resolved even by a further amendment. This article primarily introduces points (2) and (3).
Court’s Decision
The Plaintiff argued that “ワンストップ” (Wan Sutoppu; “One-Stop”) has multiple meanings and, even when combined with “相続” (Sōzoku; “Inheritance”), merely evokes a vague meaning, and therefore the applied-for mark is a type of coined word that does not cause any specific quality of the services to be recognized. The Plaintiff also argued that it was improper to consider the actual circumstances of trade concerning the work of other licensed professionals and the like, which were outside the scope of the designated services in the application.
With respect to the applicability of Article 3(1)(iii) of the Trademark Act, the Court made its determination from the perspective of whether, as of February 12, 2026, the date of the trial decision, the applied-for mark, when used for the designated services, was generally recognized by traders and consumers as indicating and describing the quality of the services.
The Court found that, of the applied-for mark, “相続” gives rise to the concept that an heir comprehensively succeeds to the rights and duties of the decedent, and that “ワンストップ” gives rise to the concept of “one place; also, being able to complete multiple matters in one place” or “being able to complete multiple purchases or errands in one place.” The Court further found that, by no later than the time of the trial decision, various licensed professionals, including administrative scriveners, and businesses cooperating with them were providing services of undertaking and supporting various inheritance-related operations, including document preparation, in one place, under names such as “相続ワンストップサービス” (Sōzoku Wan Sutoppu Sābisu; “Inheritance One-Stop Service”), “相続ワンストップ体制” (Sōzoku Wan Sutoppu Taisei; “Inheritance One-Stop System”), “相続ワンストップ窓口” (Sōzoku Wan Sutoppu Madoguchi; “Inheritance One-Stop Counter”), and “ワンストップ相続” (Wan Sutoppu Sōzoku; “One-Stop Inheritance”).
The Court regarded ordinary consumers as the consumers of the designated services in the application and held that, in light of the above meanings and actual circumstances of trade, “相続ワンストップ,” when used for the designated services in the application, would be generally recognized by ordinary consumers as indicating and describing the quality of the services, with the meaning of approximately “various inheritance-related operations can be performed in one place.”
As a result, the Court stated that, in relation to the designated services, the applied-for mark was a mark consisting solely of a mark indicating and describing the quality of the services in a commonly used manner; that, in trade, it was an indication that anyone would wish to use and, in the public interest, was not appropriate to allow a particular person to monopolize; and that it was a generally used mark lacking the ability to distinguish one’s services from those of others (distinctiveness) and could not perform the function of a trademark. The Court also held, on that basis, that consumers would recognize the applied-for mark as indicating and describing the quality of the services, namely, that “various inheritance-related operations can be performed in one place”; therefore, if it were used for services other than those described above, it would be likely to mislead as to the quality of the services and would also fall under Article 4(1)(xvi) of the Trademark Act.
Further, with respect to the actual circumstances of trade involving other licensed professionals and the like, which the Plaintiff took issue with, the Court did not accept the Plaintiff’s argument, finding that, in order to determine the recognition of ordinary consumers, who were the consumers of the designated services in the application, it was appropriate to consider not only the work of administrative scriveners but also the actual circumstances of inheritance-related operations performed by various licensed professionals, including administrative scriveners, and by businesses cooperating with them.
On the above basis, the Court held that there was no procedural defect in the trial decision and no error in the determinations concerning the applicability of Article 3(1)(iii) and Article 4(1)(xvi) of the Trademark Act, and dismissed the Plaintiff’s action seeking revocation of the trial decision.
Key Findings and Practical Implications
With respect to the distinctiveness of the applied-for mark, this judgment made its determination from the perspective of whether, as of the time of the trial decision, the applied-for mark, when used for the designated services, was generally recognized by traders and consumers as indicating and describing the quality of the services. This framework is broadly common to recent IP High Court judgments. For example, the “健康経営EXPO” (Kenkō Keiei EXPO; “Health and Productivity Management EXPO”) case (IP High Court, April 23, 2025, Case No. 2024 (Gyo-Ke) 10098), after citing the Supreme Court judgment in the Waikiki case (Supreme Court, April 10, 1979), held that it is sufficient if, as of the time of the trial decision, the mark is generally recognized by traders and consumers, including with respect to the future, as indicating the quality of the services, and that the determination should be made in consideration of the composition of the mark and the circumstances of trade concerning the designated services. However, the statement of the standard for determination in this judgment does not contain the words “including with respect to the future,” nor does it expressly state, as part of the standard, that the composition of the mark and the circumstances of trade should be considered (although, in its application of the standard, it considered the meanings and the actual circumstances of trade). In any event, in determining distinctiveness, consideration is given, more than to whether an indication identical to the mark is actually used, to what meaning consumers receive from the meanings of the constituent words and the actual circumstances of trade.
The Plaintiff argued that “相続ワンストップ” was a type of coined word, but this argument was not accepted. In recent court decisions concerning similar compound terms, such as the above-mentioned “健康経営EXPO” case and the “知財実務オンライン” (Chizai Jitsumu Onrain; “Intellectual Property Practice Online”) case (IP High Court, April 10, 2024, Case No. 2023 (Gyo-Ke) 10141), there are also examples in which the applicability of Article 3(1)(iii) was affirmed based on the meanings of the respective characters and the actual circumstances of trade, even though the mark itself was a term not listed in a dictionary. This judgment likewise derived the meaning of approximately “various inheritance-related operations can be performed in one place” from the respective meanings of “相続” and “ワンストップ.” The judgment did not individually respond to the Plaintiff’s argument that “ワンストップ” has multiple meanings, but, in light of its conclusion, it should be noted that it may be understood that breadth or abstractness of meaning does not, by itself, provide a basis for distinctiveness.
Further, among the actual circumstances of trade considered in determining the distinctiveness of a mark, there is a tendency to place importance on whether the way in which the words constituting the mark are combined is commonplace in trade. For example, in the “健康経営EXPO” case, the court found that it was widely practiced to place a theme before “EXPO” to form the name of an event; and in the “知財実務オンライン” case, after analyzing examples of “〇〇オンライン” (XX Onrain; “XX Online”) marks, the court held that consumers would recognize the goods or services shown before “オンライン” (Onrain; “Online”) as being provided online. In this judgment as well, many examples of using both words in combination to explain the content of services were found, such as “相続ワンストップサービス” and “ワンストップ相続”; although the found examples did not include the indication “相続ワンストップ” alone, it appears that indications with the word order reversed and indications to which “サービス” (Sābisu; “Service”), “窓口” (Madoguchi; “Counter”), or the like was added also functioned as circumstances supporting the descriptiveness of the applied-for mark.
In this case, although the designated services were limited to the document-preparation work of administrative scriveners, in determining the recognition of ordinary consumers, who were the consumers, the Court also considered the actual circumstances of inheritance-related services provided by other licensed professionals and cooperating businesses. Where consumers’ recognition is formed from the same type of service field as a whole, even narrowly limiting the designated services by amendment is unlikely to resolve the issue of distinctiveness. Further, in rejecting the Plaintiff’s allegation of the procedural defect described in (1) above, this judgment approved the statement in the trial decision that the grounds for refusal could not be resolved even by a further amendment intended to specify the legally exclusive work of administrative scriveners; this may also be said to demonstrate this point. However, this judgment did not generally hold that the circumstances of every related industry may always be considered, and it should be noted that the determination was premised specifically on the consumers and the actual circumstances of inheritance-related operations in this case.
※This article is intended solely to provide general information and should not be construed as legal advice.
Author: Eriko Kitahara
